TITLE XXXI
TRADE AND COMMERCE
Chapter 359-M
BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT
Section 359-M:1
359-M:1 Definitions. –
In this chapter:
I. "Demand letter" means a letter, email, or other communication asserting or claiming that the target has engaged in patent infringement.
II. "Target" means a New Hampshire person or business:
(a) Who has received a demand letter or against whom an assertion or allegation of patent infringement has been made;
(b) Who has been threatened with litigation or against whom a lawsuit has been filed alleging patent infringement; or
(c) Whose customers have received a demand letter asserting that the person's or business's product, service, or technology has infringed upon a patent.
Source. 2014, 197:2, eff. July 11, 2014.
Section 359-M:2
359-M:2 Bad Faith Assertions of Patent Infringement. –
I. A person shall not make a bad faith assertion of patent infringement.
II. A court may consider the following factors as evidence that a person has made a bad faith assertion of patent infringement:
(a) The demand letter does not contain the following information:
(1) The patent number.
(2) The name and address of the patent owner or owners and assignee or assignees, if any.
(3) Factual allegations concerning the specific areas in which the target's products, services, and technology infringe the patent or are covered by the claims in the patent.
(b) Prior to sending the demand letter, the person fails to conduct an analysis comparing the claims in the patent to the target's products, services, and technology, or such an analysis was done but does not identify specific areas in which the products, services, and technology are covered by the claims in the patent.
(c) The demand letter lacks the information described in subparagraph II(a), the target requests the information, and the person fails to provide the information within a reasonable period of time.
(d) The demand letter demands payment of a license fee or response within an unreasonably short period of time.
(e) The person offers to license the patent for an amount that is not based on a reasonable estimate of the value of the license.
(f) The claim or assertion of patent infringement is meritless, and the person knew or should have known that the claim or assertion is meritless.
(g) The claim or assertion of patent infringement is deceptive.
(h) The person or its subsidiaries or affiliates have previously filed or threatened to file one or more lawsuits based on the same or a similar claim of patent infringement; and
(1) Those threats or lawsuits lacked the information described in subparagraph II(a); or
(2) The person attempted to enforce the claim of patent infringement in litigation and a court found the claim to be meritless.
(i) Any other factor the court finds relevant.
III. A court may consider the following factors as evidence that a person has not made a bad faith assertion of patent infringement:
(a) The demand letter contains the information described in subparagraph II(a).
(b) Where the demand letter lacks the information described in subparagraph II(a) and the target requests the information, the person provides the information within a reasonable period of time.
(c) The person engages in a good faith effort to establish that the target has infringed the patent and to negotiate an appropriate remedy.
(d) The person makes a substantial investment in the use of the patent or in the production or sale of a product or item covered by the patent.
(e) The person is:
(1) The inventor or joint inventor of the patent or, in the case of a patent filed by and awarded to an assignee of the original inventor or joint inventor, is the original assignee; or
(2) An institution of higher education or a technology transfer organization owned or affiliated with an institution of higher education.
(f) The person has:
(1) Demonstrated good faith business practices in previous efforts to enforce the patent, or a substantially similar patent; or
(2) Successfully enforced the patent, or a substantially similar patent through litigation.
(g) Any other factor the court finds relevant.
Source. 2014, 197:2, eff. July 11, 2014.
Section 359-M:3
359-M:3 Bond. –
Upon motion by a target and a finding by the court that a target has established a reasonable likelihood that a person has made a bad faith assertion of patent infringement in violation of this chapter, the court shall require the person to post a bond in an amount equal to a good faith estimate of the target's cost to litigate the claim and amounts reasonably likely to be recovered under this chapter, conditioned upon payment of any amounts finally determined to be due to the target. A hearing shall be held if either party so requests. A bond ordered pursuant to this section shall not exceed $250,000. The court may waive the bond requirement if it finds the person has available assets equal to the amount of the proposed bond or for other good cause shown.
Source. 2014, 197:2, eff. July 11, 2014.
Section 359-M:4
359-M:4 Enforcement; Remedies; Damages. –
I. The attorney general may bring an action in superior court for appropriate relief, including a temporary or permanent injunction, to enforce the provisions of this chapter.
II. A target of conduct involving assertions of patent infringement, or a person aggrieved by a violation of this chapter may bring an action in superior court. A court may award the following remedies to a plaintiff who prevails in an action brought pursuant to this section:
(a) Equitable relief.
(b) Damages.
(c) Costs and fees, including reasonable attorney's fees.
III. This chapter shall not be construed to limit any remedies available to the state of New Hampshire or to any person under any other law and shall not restrict the attorney general with regard to conduct involving assertions of patent infringement.
Source. 2014, 197:2, eff. July 11, 2014.
Section 359-M:5
359-M:5 Exemption. –
A demand letter or assertion of patent infringement that includes a claim for relief arising under 35 U.S.C. section 271(e)(2) or 42 U.S.C. section 262 shall not be subject to the provisions of this chapter.
Source. 2014, 197:2, eff. July 11, 2014.